Ex Parte Honeycutt

Patent Trial and Appeal Board

Apr 12, 2018

12692477 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/692,477 01122/2010
28960 7590 04/12/2018
HAVERSTOCK & OWENS LLP
162 N WOLFE ROAD
SUNNYVALE, CA 94086
FIRST NAMED INVENTOR
Rob Honeycutt
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
HCUTT-00102 2026
EXAMINER
SULLIVAN, MATTHEW J
ART UNIT PAPER NUMBER
3677
MAILDATE DELIVERY MODE
04/12/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB HONEYCUTT
Appeal2017-002453
Application 12/692,477
Technology Center 3600
Before JAMES P. CALVE, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rob Honeycutt ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's Final decision rejecting claims 1-23. 1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appeal Brief, Snik, LLC is the real party in interest.
Appeal Br. 2.
Appeal2017-002453
Application 12/692,477
THE CLAIMED SUBJECT MATTER
Appellant's invention "relates to a cord holder used to affix a headset
cord to clothing and bags." Spec. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A headset cord holder comprising:
a. a closure mechanism that releasably couples a first
portion of an article to a second portion of the article, the
closure mechanism comprising a body comprising an
outside surface, wherein the closure mechanism is selected
from a group consisting of a garment button, a zipper
puller, a garment snap fastener, and a buckle attachment;
and
b. a first groove integrally molded within the outside
surface of the body that directly receives and releasably
holds a headset cord, the first groove comprising a first
groove wall, a second groove wall and a groove entry
space, both the first groove wall and the second groove
wall extending into the body below the outside surface to
form the first groove, such that when the headset cord is
secured within the first groove, at least a portion of the
headset cord is held within the body and below the outside
surface.
REJECTIONS
1. Claims 1, 3, 5, 9, 11, 12, 17, 19, and 22 are rejected under 35
U.S.C. § 102(b) as anticipated by Yang (US 7,559,123 Bl, issued
July 14, 2009) or alternatively under 35 U.S.C. § 103(a) as
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Application 12/692,477
unpatentable over Yang and Ishida (US D480,942 S, issued Oct.
21, 2003).
2. Claim 23 is rejected under 35 U.S.C. § 102(b) as anticipated by
Kissam (US 630,544, issued Aug. 8, 1899).
3. Claims 2, 6-8, 14, 15, 18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yang and Singh (US 2008/0123258
Al, published May 29, 2008).
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yang and Nasu (US 6,526,635 B2, issued Mar. 4, 2003).
5. Claims 10, 16, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yang and Ishida.
6. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yang and Senink (US 2006/0059666 Al, published Mar. 23,
2006).
DISCUSSION
Rejection 1
Claims 1, 3, 5, and 9
Appellant argues claims 1, 3, 5, and 9 as a group. Appeal Br. 13. We
select claim 1 as representative, and claims 3, 5, and 9 stand or fall with
claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
The Examiner finds, inter alia, that Yang discloses "a cord/tubing
hold comprising a closure mechanism comprising a body (elements 1, 2, 3)"
wherein the recited outside surface of the body comprises "the contiguous
outside surface of elements 1, 2, and 3 together." Final Act. 6; Ans. 11.
Appellant contends that Yang discloses "adapter member 3 comprises a
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mounting base 3[1] (body) and a coupling device 32 fixedly provided at the
top side of the mounting base 31" and "coupling device 32 is a substantially
U-shaped resilient plate member formed integral with the top wall of the
mounting base 31."' Appeal Br. 10 (citing Yang 3: 15-17, 4: 16-18).
According to Appellant, because Yang's coupling device 32, which the
Examiner finds corresponds to the recited first groove wall and second
groove wall, is raised above Yang's mounting base 31, "Yang does not teach
that the groove walls extend into the body below the outside surface" as
required by claim 1. Id. Appellant notes that the Specification discloses
"groove 120 is molded or otherwise built into the body 100." Id. The
Examiner responds that "[ n ]either [A ]pplicant' s [S ]pecification nor his
claims define the 'body' to be of a single component. Applicant has not
provided any evidence which would constitute a requirement or even a
preference to interpret the 'body' of Yang as being" the mounting base.
Ans. 10.
The initial issue for resolution of this rejection revolves around the
proper construction of the term "body" in independent claims 1, 11, and 1 7.
We give claim terms the broadest reasonable interpretation consistent with
the Specification as it would be interpreted by one of ordinary skill in the art.
See In re Suitco Swface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010); In
re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims
are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Appellant's Specification describes "body" by identifying what is
deemed the "body" in various embodiments of the claimed invention. For
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example, element 110 in Figure 1 A, element 210 in Figure 2C, element 310
in Figure 3B, etc. Spec. 4, 6, Figs. IA, 2C, and 3B. Appellant does not
direct us to any portion of the Specification where the term "body" is
specially defined, nor does Appellant direct our attention to any portion of
the Specification requiring the "body" to be a unitary structure. An ordinary
definition of "body" is "the trunk or main mass of a thing."
http://www.dictionary.com/browse/body (last accessed April 9, 2018).
Therefore, we determine that one of ordinary skill in the art, after reviewing
the Specification, would reasonably understand the claim term "body"
should be given its ordinary meaning as the main mass of the recited closure
mechanism.
Yang discloses a "female buckle member 1, a male buckle member 2
and adapter member 3 provided between the female buckle member 1 and
the male buckle member 2." Yang 2:40-42. Yang further discloses that
"adapter member 3 comprises a mounting base 31 and a coupling device 32
fixedly provided at the top side of the mounting base 31." Id. at 3:15-17.
Further, Yang's "coupling device 32 is a substantially U-shaped resilient
member formed integral with the top of the mounting base 31." Id. at 4:16-
18. Yang illustrates that female buckle member 2 receives the coupling
device 3 which is held in place by male buckle member 1, forming, a single
connected structure including mounting base 31. See id. Figs. 1, 2.
Appellant does not direct us to any disclosure in Yang defining the
"body" of Yang's device. Rather, Appellant equates Yang's "mounting
base" to the claimed "body." See Appeal Br. 10 (Yang teaches ... a
mounting base 31 [body]."). Appellant does not persuade us that Yang's
mounting base 31 corresponds to the claimed body. Rather, in accordance
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with our construction of the term "body," mounting base 31 forms part of
the body of Yang's device when assembled as shown in Yang's Figure 1.
Further, Appellant does not dispute the Examiner's finding that "the
contiguous outside surface of elements 1, 2, and 3 together" corresponds to
the recited "outside surface" of the body. Ans. 11. Based on our
construction of the term "body" and the Examiner's finding regarding the
outside surface, Appellant's argument that Yang does not disclose "the first
groove wall and the second groove wall extending into the body below the
outside surface to form the first groove such that when the headset cord is
secured within the first groove at least a portion of the headset cord is held
within the body and below the outside swface" does not apprise us of
Examiner error. Appeal Br. 13, (emphasis added).
Appellant also contends that claim 1 positively recites "a headset
cord" which "Yang clearly does not teach." Appeal Br. 10. In support of
this contention, Appellant refers us to the claim limitation "a first groove
integrally molded within the outside surface of the body that directly
receives and releasably holds a headset cord." Id. The Examiner responds
that claim 1 "is not considered to positively recite the 'headset cord' because
the headset cord is only 'worked upon' by the structure of the holder. The
recitation of the headset cord does not impart any structure upon the
apparatus." Ans. 10. The preamble of claim 1 indicates that claim 1 is
directed to a headset cord holder, not a headset cord holder in combination
with a headset cord, which is consistent with Appellant's original filed
claims. See Claims filed 1/22/2010. We agree with the Examiner that the
apparatus claimed is a headset cord holder. We, thus, are not persuaded by
Appellant's argument that the recited intended use of the headset cord holder
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of claim 1, i.e., "releasably hold[ing] a headset cord," differentiates the
structure of the headset cord holder recited in claim 1 from Yang. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable.") (citations omitted).
The Examiner's finding that Yang anticipates claim 1 is supported by
a preponderance of the evidence. We, thus, sustain the rejection of claim 1.
Claims 3, 5, and 9 fall with claim 1. Because we affirm the anticipation
rejection based on Yang, we do not reach the alternative rejection set forth in
the Answer (Ans. 3---6) ofunpatentability based on Yang and Ishida. 37
C.F.R. § 41.50(a)(l).
Claims 11, 12, 17, 19, and 22
Independent claims 11 and 1 7 contain substantially similar limitations
as claim 1 regarding the "body." Appeal Br. 22, 23 (Claims App.).
Appellant submits the same arguments for patentability of claims 11 and 17
as for claim 1. Id. at 13-14. We sustain the rejection of claims 11 and 17 as
well as dependent claims 12, 19, and 22 for the same reasons stated above in
connection with the rejection of claim 1.
Rejection 3
Claim 23 recites a headset cord holder with the same limitations as
claim 1 except that the closure mechanism group does not include a buckle
attachment as in claim 1. See id. at 24 (Claims App.). The Examiner finds
that Kissam discloses all the limitations of claim 23. Final Act. 10. The
Examiner determines that the limitation "integrally molded within the
outside surface of the body" is a product-by-process limitation and the
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determination of patentability is based on the product itself even if the prior
art product is made by a different process. Id. (citing In re Thorpe, 227
USPQ 964).
Appellant contends that "Kissam is directed to a pocket safety
attachment to hold a stem of a pocket watch" and "does not teach the device
as a headset cord holder nor a headset cord." Appeal Br. 15. Appellant next
contends that "Kissam teaches away from the pocket safety attachment of
Kissam being used as a cord routing apparatus." Id. at 16. For the following
reasons, we sustain the rejection of claim 23.
Appellant's first contention that Kissam does not teach a headset cord
holder or a headset cord is substantially the same argument raised in
connection with Yang in Rejection 1. We agree that Kissam discloses a
pocket safety attachment for holding the stem of a pocket watch. Kissam,
11. 74--83. This contention, however, is unpersuasive for the same reasons
stated above in connection with Rejection 1. In re Schreiber, 128 F. 3d at
1477. Appellant's second contention is also not persuasive because teaching
away is irrelevant to an anticipation analysis. Celeritas Techs., Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); see also
Seachange Int'!, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
We also note that Appellant has not addressed the Examiner's determination
that the "integrally molded" claim limitation is a product-by-process claim.
As Appellant does not apprise us of Examiner error, we sustain the rejection
of claim 23.
Rejections 3-6
Claims 2--4, 6-8, and 10 depend directly or indirectly from claim 1,
claims 13-16 depend directly or indirectly from claim 11, and claims 18, 20,
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and 21 depend from claim 17. Appeal Br. 21-23 (Claims App.). Appellant
does not provide separate arguments for the patentability of any of these
claims, but argues that each of these claims are patentable due to their
dependency on their respective independent claims. Id. at 17-19. We
sustain the rejection of claims 2--4, 6-8, 10, 13-16, 18, 20, and 21 forthe
same reasons stated above in connection with the rejections of independent
claims 1, 11, and 1 7.
DECISION
The Examiner's decision rejecting claims 1-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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